LES, Herbex, NIPMO, IP Briefs, the Crammer and Kenya's Copyright developments - Friday ramblings

LES, Herbex, NIPMO, IP Briefs, the Crammer and Kenya's Copyright developments - Friday ramblings

By Darren Olivier   Friday, October 13, 2017   No comments:

The Licensing Executives Society of South Africa has a very pleasant and active local membership. This week their one day conference attracted over 50 attendees speaking on topics that  included South Africa’s draft IP Policy, OECD tax regime developments, NIPMO’s dynamic progress under Dr Kerry Faul and the Competition Commission’s foray into the world of compulsory licensing. It is as interesting as it is diverse which is real attraction of the LES local chapter and this year they were joined by LES International President Peter Hess, as well as local President Alessia Del Bianco.

My own involvement was to join Dr Madelein Kleyn in a discussion that traversed new acronyms BEPS and DEMPE in the context of transfer pricing, international tax structures and IP structuring. You might well ask what the heck do you know about that and the answer would be - a lot more now then I did prior to preparing for the discussion. Madelein's editorial in the latest IP Briefs will provide some context to these developments and all I have to say is that if BEPS and DEMPE work effectively there will be no need for current headaches caused by local exchange control in South Africa, a mechanism designed in part to curtail base tax erosion.

Without wanting to single out any presentation, Dr Kerry Faul’s update on NIPMO developments was very heartwarming. As an advocate of both intellectual property and Africa, this national initiative to capture and commercialise innovation of some of the smartest minds in South Africa and use it for social good, job creation and general upliftment was commendable to start with. NIPMO was always going to have its challenges and still does but there is evidence of genuine achievement towards its goals. For this Dr Faul received an award from LES which deserves particular mention and congratulations.

Turning to another initiative that is close to my heart, the Crammer is a concept that attempts to digest a year’s worth of IP developments into a single morning for the benefit of busy in-house counsel, executives and business owners. My firm embraced the idea and now advocates their biggest and boldest Crammer yet next Thursday at the Radisson Sandton (not Gautrain), that I have the pleasure of MCing. You can view the complete agenda in the Watering Hole section here. The guest speaker is the excellent Michael Charton who will present My Father’s Coat, a truly inspiring and very relevant South Africa tale. It's nearly full so hurry!

"It’s our biggest and boldest Crammer® yet – presented by Adams & Adams to an exclusive audience of in-house legal representatives, entrepreneurs and executive decision-makers. In focusing on IP, commercial and property law developments, our legal professionals will review interesting updates and commentary on subjects ranging from innovation funding, copyright and brand development, to data protection and a number of significant IP and commercial case law studies."

Another recent development is news that the ASA in South Africa is continuing to progress its resurgence under the watchful eye of acting CEO Gail Schimmel and the loyal Leon Grobler. Emboldened by the order in the much anticipated Herbex case appeal which had threatened to severely curtail the decision making powers of the ASA they are making progress in re-captivating consumer and industry trust as a self regulated watchdog.

The upshot of the Herbex order is that although the ASA is not able to rule against non members it is able to adjudicate on whether any advertising is contrary to its code.  This will enable it members, which are vast ranging and include a number of industry associations embracing media, consumers and broadcasting to elect not to accept advertising which is contrary to the code. For more on the ASA on this blog, click here.

Looking north, Kenya’s Copyright (Amendment) Bill 2017 was recently tabled in parliament for a first reading. It has provisions that seek to update copyright laws with the digital age and information systems, as well as specific benefits for those that are blind, have visual impairments and certain physical disabilities. It also introduces the concept of a resale royalty right. I am hoping that our colleagues in East Africa will provide some commentary on this development in a future posts together with news of the Kenya Copyright Board’s new logo which is the subject of a competition launched by their Department of Justice, with almost $2000 worth of prize money up for grabs.

Have a good weekend!

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GP: The ASA is here to Stay ...And BAT feels the effect of its power

GP: The ASA is here to Stay ...And BAT feels the effect of its power

By Afro-Buff   Friday, March 17, 2017   No comments:

From the desk of Andrew Papadopoulos (KISCH IP) comes this guest post which is a timely update on what's happening at the Advertising Standards Authority (“ASA”) in South Africa. The ASA was/is experiencing financial difficulty and recently went into business rescue. This, coupled with the damning decision in Herbex (discussed below and which is currently on appeal), left many to doubt the future of this traditional forum of choice for packaging and advertising disputes. Here he analyses its predicament and the recent ruling in the BAT case.

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"There have been many reports about the future of ASA in the recent months but it appears that the ASA is alive and kicking, with no hint of it going anywhere.  If anything, the ASA is poised at obtaining more power.

The first supposed blow to the ASA was a May 2016 High Court judgment in the case between Herbex (Pty) Ltd and the ASA.  This judgment placed in question the ASA’s ability to adjudicate matters over advertisers who are not members of the ASA.  This matter is currently on appeal before the Supreme Court of Appeal (“SCA”) and therefore the effect of this is that the High Court decision is suspended pending the SCA’s ruling.

Following this judgment and in the latter part of 2016, the ASA went into voluntary business rescue in an effort to restructure the industry regulating body.  Comment out of the ASA on this process was that it was a strategic decision and would not affect the operations of the organisation.

These two events did not instil much hope in the ASA and attracted many questions surrounding the relevance of the ASA as an industry watchdog.  However, it would seem that the ASA had different thoughts.

A proposed advertising industry code and ombudsman scheme has been published for public comment, in terms of which the ASA is to be recognised and accredited as an ombudsman for alternative dispute resolution of complaints pertaining to advertising. In other words, the ASA has applied for formalisation of its “Industry Code” in terms of the Consumer Protection Act, which would thereby give the ASA the teeth it has been missing in its current form.  This would also remove any question about the ASA’s jurisdiction and avoid cases like the Herbex judgment.

The proposed Industry Code mainly concerns the consumer-centric provisions (for example, those relating to misleading claims and untruthful advertisements) and omits those competitor provisions relating to advertisements which imitate and take advantage of another’s advertising goodwill.  Therefore, once the Industry Code is enacted, it is proposed that all provisions which have been excluded in the Industry Code will be dealt with in terms of the ASA’s current advertising code.  It is further proposed that the Industry Code (or some other legislation) will later deal with the competitor protection provisions in the same way.

So change appears to be on the horizon for the ASA… but what is happening in the meantime?  Surely would-be advertising infringers don’t just pause their unlawful activities while the ASA gets its house in order?  Well, following a recent judgment out of the Final Appeal Committee of the ASA, it would appear that the ASA has not missed a step.

Since December 2015, tobacco manufacturers Leonard Dingler (part of the Philip Morris group) and British American Tobacco (“BAT”) have been embroiled in a bitter battle over the latter’s entrant to the pipe tobacco market, AFRICA GOLD.  The dispute went through all levels of the ASA (together with numerous interlocutory applications being launched) and has concluded in a ruling handed down on 7 March 2017, with BAT being ordered to immediately cease use of its AFRICA GOLD advertisements and packaging on account of them being too close to Leonard Dingler’s famous BOXER pipe tobacco packaging.

Leonard Dingler’s original complaint was on the grounds that the AFRICA GOLD packaging and get-up is too close to the well-known BOXER pipe tobacco.

The Final Appeal Committee of the ASA agreed with Leonard Dingler and found that BAT’s AFRICA GOLD packaging, which was launched in August 2015, imitates and takes advantage of the advertising goodwill subsisting in the BOXER product and packaging design.  The ASA held that BAT had intentionally designed the AFRICA GOLD packaging to utilise the same combination of key elements to those of the BOXER packaging which has been in the South African market for over 95 years, with hardly any changes to the pack design.

An earlier decision by the Advertising Industry Tribunal of the ASA also found that BAT’s use of the words “Original”, “Makoya” and “No. 1” on the AFRICA GOLD packaging was likely to mislead the relevant consumers and likely to exacerbate the impact of the imitation.

During proceedings BAT attempted to challenge the ASA’s jurisdiction to adjudicate the matter (following the Herbex judgment), but BAT later withdrew this defence on account of it being a member of the Consumer Goods Council of South Africa (“CGCSA”) which is a member of the ASA.  The CGCSA actively advocates for the ASA, stating on its website that “the regulation of advertising is essential for the country and ASA has been the voluntary regulator… The CGCSA members place consumer protection at the heart of its business, recognizing that consumers have the right to transparency, to fair business practices and to the right of redress amongst others…”

The ASA ruled that BAT’s current packaging, which includes all of its point of sale material, must be withdrawn, and the process to withdraw the packaging must be actioned with immediate effect.  BAT was also ordered to pay Leonard Dingler’s costs in the proceedings."

Thanks Andrew, and very encouraging indeed.

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